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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BACCARAT SA v. Sprout Ltd., Mamoru Shiga

Case No. D2010-1694

1. The Parties

The Complainant is BACCARAT SA, a limited company registered under the laws of France (the “Complainant”) of Baccarat, France, represented by MEYER & Partenaires, France.

The respondent is Sprout, Ltd., Mamoru Shiga of Hiratsuka-shi, Kanagawa, Japan (the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <baccarat-shop.net> is registered with GMO Internet, Inc. DBA Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2010. On October 6, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2010, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 13, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted by email to the parties a communication regarding the language of proceedings. The Complainant filed an Amended Complaint on October 15, 2010. In the amended Complaint the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in English and Japanese, and the proceedings commenced on October 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was stated to be November 11, 2010. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on November 12, 2010.

The Center appointed Haig Oghigian as the sole panelist in this matter on November 19, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

As there is no submission from the Respondent, the facts are taken from the Complaint and generally are accepted as true.

The Complainant, formerly known as the COMPAGNIE DES CRISTALLERIES DE BACCARAT, is an internationally recognized manufacturer of crystal wares, and has been a supplier to a great majority of foreign courts and heads of states for more than two centuries. The BACCARAT trademarks have since that time become recognized all over the world, with the Complainant’s first trademark registration apparently dating back to December 29, 1860 for BACCARAT FRANCE and device.

The Complainant is the right holder of more than 700 trademarks across the world, including 29 of which are registered in Japan. Such trademarks owned by the Complainant in Japan include, among others:

- Japanese trademark registration No. 1907200 for BACCARAT and katakana transcription in classes 11, 20 and 21 including crystal wares, filed October 21, 1983, last renewed on October 24, 2006; and

- Japanese trademark registration No. 2331063 for BACCARAT in classes 14, 20, 21, 24 for jewelry and crystal ware, filed July 30, 1985, last renewed on September 25, 2001.

The Respondent registered the disputed domain name <baccarat-shop.net> on October 30, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the disputed domain name <baccarat-shop.net> be transferred from the Respondent to the Complainant.

The Complainant submits that the BACCARAT trademark is one of the oldest trademarks in the world, and emphasizes that its two centuries old, wide and consistent use throughout the world as indicative of its status as a well-known mark. The Complainant also cites previous UDRP decisions which found that the trademark BACCARAT is well-known in the field of crystal. (See for example, Baccarat SA v. Vine and Weaver,
WIPO Case No. D2010-0540 “the BACCARAT mark and name are so well-known that it must be concluded that, in registering the domain name the Respondent knew that it was appropriating a well-known trademark without permission.”)

The Complainant argues that the disputed domain name is identical or confusingly similar to its marks because the disputed domain name wholly incorporates the BACCARAT mark. The addition of the gTLD “.com” and the generic word “shop” do not affect the overall impression of the dominant portion of the name, BACCARAT, and are therefore irrelevant to determining the confusing similarity of the trademarks. In addition, the inclusion of the top-level domain extension or a hyphen does not give any distinctive character to the disputed domain name. The Complainant further alleges that anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. Due to the well-known reputation of the BACCARAT trademark, there is a considerable risk that the trade public will perceive the Respondent’s disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it is not the Respondent’s business, trading name nor the trademark of the Respondent, neither did the Complainant license or authorize the Respondent to use the BACCARAT trademark in the disputed domain name or in any other connection. The Complainant ascertains that the Respondent is not in any way related to its business, is not one of its agents and does not carry out any activity for or has any business with it.

The Complainant further submits that the disputed domain name was registered and is used in bad faith. It contends that as the Complainant has previously demonstrated the well-known reputation of its trademark BACCARAT worldwide, registering a domain name including the entire BACCARAT trademark cannot be placed on the account of fortuity, especially in combination with the generic term “shop”, when the disputed website is offering for sale BACCARAT goods. Further, the Complainant claims that it appears that the Respondent is engaged in a pattern of registrations where the Respondent uses domain names, which correspond to well-known trademarks in which it has no apparent rights.

B. Respondent

The Respondent did not submit a formal response to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

It is noted that the language of the registration agreement is Japanese and the default language of the proceedings would have been Japanese. The Complainant asserts that English should be the language of the proceedings and that the Respondent would not be prejudiced if English would be the language of the proceedings.

On October 13, 2010, the Center notified the parties in both English and Japanese that the Complaint was submitted in English, that the language of the registration agreements for the disputed domain name was Japanese, and provided the parties with detailed information concerning the language of proceedings. The Respondent was therefore aware of the language matters in the case and had an opportunity to make any comments or submissions if so wished, but it has not objected to the language of the proceedings at all. The Panel also notes that the Center notified the Complaint to the Respondent in Japanese and English and also gave the Respondent the opportunity to submit a Response in Japanese.

Paragraph 11(a) of the Rules reserves the Panel the authority to determine the proper language of the proceeding. In view of all the above circumstances and the Complainant’s request, the Panel finds that there is no prejudice caused to the Respondent if the proceedings are conducted in English. The selection of the Japanese language as the language of the proceedings in the present case would be a burden to the Complainant in terms of translation expenses, and would also cause undue delay to the proceedings.

The Panel is therefore satisfied that English should be selected as the language of the administrative proceedings of this case, and shall therefore render the decision in English in accordance with paragraph 11 of the Rules.

6.2. The Panel’s Decision in relation to the Disputed Domain Name

Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:

(i) The domain name is identical or confusingly similar to the trademark; and

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In line with such provision, the Complainant must prove that it enjoys the trademark right, and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.

It is established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (InfoSpace.com, Inc. v. Tenenbaum Ofer,
WIPO Case No. D2000-0075; Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429).

It is clear on the given evidence that the Complainant has a longstanding use of its name BACCARAT and that it has registered trademarks that incorporate this name in many parts of the world, including Japan where the Respondent resides.

The disputed domain name differs from the Complainant’s name and mark only by the addition of a hyphen and the generic word “shop”. This mere combination of the word “shop” and the BACCARAT trademark does not provide the disputed domain name with self-distinctiveness.

Therefore, the Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s name and mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances include:

- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

- legitimate non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

The Complainant has no relationship with the Respondent and has not authorized the Respondent to use the disputed domain name <baccarat-shop.net>.

The Complainant asserts that the Respondent is not currently and has never been known under the single name “Baccarat”, or its combination with the word “shop”. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert customers. No evidence suggests the Respondent’s use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Respondent appears to be offering Complainant’s goods and other competing goods on the website associated with the disputed domain name. This can not be considered to be bona fide (see Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903).

The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. According to the consistent line of UDRP decisions, in such case the burden shifts to the Respondent to rebut the evidence (see among others, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,
WIPO Case No. D2002-0806; International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio,
WIPO Case No. D2002 -0683).

It is noted that the Respondent failed to file a Response to prove its rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.

The Panel therefore finds that the Complainant has established on the balance of probabilities that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel acknowledges that the notoriety of the Complainant’s trademark in the range of crystal products is such that a “prima facie presumption is raised that the Respondent registered the [domain name] for the purpose of selling it to the Complainant or to a competitor of the Complainant or that it was intended to be used in some way to attract for commercial gain users to the website by creating a likelihood of confusion with the Complainant’s mark” (Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo,
WIPO Case No. D2001-0020). Further, the Respondent’s usage of the disputed domain name to promote third and competing products (Complaint, Annex J) and the display of links on the webpage which redirect the users to websites offering to sell the Complainant’s and competing goods must be considered as unfair use, which disrupts the Complainant’s business and is evidence of bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy (Deceuninck NV v. William Vaughan, smtm investments ltd.,
WIPO Case No. D2007-1911). The Panel has little hesitation in finding that the disputed domain name was registered and is being used in bad faith.

Therefore, the Panel is satisfied that the Complainant has established bad faith as required by paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <baccarat-shop.net> be transferred to the Complainant.